Polaris Industries, Inc. v. Arctic Cat, Inc.

United States Court of Appeals
for the Federal Circuit
______________________
POLARIS INDUSTRIES, INC.,
Appellant
v.
ARCTIC CAT, INC.,
Cross-Appellant
______________________
2016-1807, 2016-2280
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2014-01427, IPR2014-01428.
______________________
Decided: February 9, 2018
______________________
J. DEREK VANDENBURGH, Carlson, Caspers, Vanden-
burgh, Lindquist & Schuman, P.A., Minneapolis, MN,
argued for appellant. Also represented by ALAN GARY
CARLSON, DENNIS BREMER.
JOSEPH HERRIGES, JR., Fish & Richardson P.C., Min-
neapolis, MN, argued for cross-appellant. Also represent-
ed by JOHN CAMERON ADKISSON, ROBERT P. COURTNEY,
CONRAD GOSEN.
______________________
Before LOURIE, O’MALLEY, and HUGHES, Circuit Judges.
2 POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC.
O’MALLEY, Circuit Judge.
Polaris Industries, Inc. (“Polaris”) owns U.S. Patent
No. 8,596,405 (“the ’405 patent”), which is directed to all-
terrain vehicles (“ATVs”) having at least two seats ar-
ranged side-by-side. Polaris’s competitor, Arctic Cat, Inc.
(“Arctic Cat”), filed two petitions for inter partes review,
challenging the patentability of all thirty-eight claims of
the ’405 patent as obvious under 35 U.S.C. § 103 based on
different combinations of prior art references. The Patent
Trial and Appeal Board (“Board”) found, in two inter
partes review proceedings, that the claims are unpatenta-
ble over one combination of references, but not the other.
See Arctic Cat, Inc. v. Polaris Indus., Inc., No. IPR2014-
01427, 2016 WL 498434 (P.T.A.B. Feb. 4, 2016) (1427
Decision); Arctic Cat, Inc. v. Polaris Indus., Inc., No.
IPR2014-01428, 2016 WL 498539 (P.T.A.B. Feb. 4, 2016)
(1428 Decision). The parties cross-appealed.
For the reasons below, we affirm in part, vacate in
part, and remand for further proceedings in the 1427
Decision. We affirm the Board’s determination that the
challenged claims were not proven unpatentable in the
1428 Decision.
I. BACKGROUND
A. The ’405 Patent
The ’405 patent, titled “Side-by-Side ATV,” issued on
December 3, 2013, and was assigned to Polaris. Accord-
ing to the specification, the invention of the ’405 patent
“relates to [ATVs] having at least a pair of laterally
spaced apart seating surfaces.” ’405 patent, col. 1, ll. 10–
12. At several points, the ’405 patent expresses a desire
that the ATV have a low center of gravity. The specifica-
tion, for example, explains that in one “illustrative embod-
iment,” shown in Figure 2, “the ratio of the wheelbase to
the seat height, or distance A to distance B, is about 6.55
to 1.” Id. col. 4, ll. 19–21. The specification goes on to
POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 3
state that “the present invention contemplates ATVs
having a ratio of wheelbase to seat height greater than
about 6.0 to 1,” which “facilitates a relatively low vehicle
center of gravity and further provides improved ergonom-
ics, handling, and space utilization.” Id. col. 4, ll. 23–28.
The specification also provides that, in another embodi-
ment, “various relatively heavy components” such as the
battery and fuel tank “are positioned vertically proximate
the frame 15 to lower the vehicle’s center of gravity,
thereby improving balance and stability.” Id. col. 5, ll.
23–35
Each of the thirty-eight claims recites components
housed within the ATVs, and specifies the spatial rela-
tionship between these components. For example, inde-
pendent claim 1, at issue on appeal, recites an ATV
including:
[a] a frame, comprising a front frame portion, a
mid frame portion and a rear frame portion;
[b] a front suspension supported by the front
frame portion;
[c] at least two front wheels coupled to the front
suspension;
[d] a front axle assembly supported by the front
frame portion and drivingly coupled to the front
wheels;
[e] a seating area supported by the mid frame
portion, comprising side by side seats;
[f] an engine supported by the rear frame por-
tion, the engine positioned rearwardly of the seat-
ing area;
[g] a transmission coupled to and extending
rearwardly of the engine;
4 POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC.
[h] a rear suspension supported by the rear frame
portion;
[i] at least two rear wheels coupled to the rear
suspension;
[j] a rear axle assembly supported by the rear
frame portion and drivingly coupled to the rear
wheels;
[k] a front drive shaft extending between the
transmission and the front axle assembly for cou-
pling the transmission to the front wheels;
[l] and a rear drive shaft extending between the
transmission and the rear axle assembly for cou-
pling the transmission to the rear wheels.
Id. col. 11, ll. 2–25.
The claims that depend from claim 1—i.e., claims 2–33
and 35—either specify the spatial relationship between
the various components or recite additional components,
such as “side-by-side bucket seats having a seat back and
seat bottom.” Id. col. 11, ll. 26–28 (claim 2). Also at issue
on appeal are dependent claims 15–19, which include
limitations regarding the placement of a “protective
panel,” fuel tank, battery, and front driveshaft. Id. col.
11, l. 61–col. 12, l. 6. These five claims all depend from
claim 5, which recites “[t]he all-terrain vehicle of claim 1,
wherein the rear frame portion comprises a lower rear
frame portion and an upper rear frame portion.” Id. col.
11, ll. 35–37.
The only other independent claim, claim 34, differs
from claim 1 in two relevant ways. First, while claim 1
requires that the front and rear drive shafts “extend[]
between” the transmission and the front and rear axle
assemblies, respectively, claim 34 requires that these
drive shafts “extend[] forward of the transmission” and
“rearward of the transmission,” respectively. Compare id.POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 5
col. 11, ll. 20–26, with id. col. 13, ll. 6–11. Second, while
claim 1 requires that the transmission “extend[] rear-
wardly of the engine,” claim 34 requires that the trans-
mission be located “completely rearward of the seating
area.” Compare id. col. 11, ll. 14–15, with id. col. 12, ll.
66–67.
B. The Prior Art
Three prior art references—U.S. Patent Nos.
7,658,258 (“Denney”), 5,327,989 (“Furuhashi”), and
3,709,314 (“Hickey”)—are relevant to these appeals.
These references are described below.
1. Denney
Denney is directed to “an all terrain, four-wheeled ve-
hicle frame for carrying at least two passengers in a side-
by-side riding configuration, comprising a rigid, tubular
frame body.” Denney, at Abstract. The invention of
Denney “provides for a forward passenger compartment
having structural support members for carrying a pair of
seats for the side-by-side passengers” and “a rearward
engine compartment configured for receiving an engine,
power train, and transmission for driving wheels of the
vehicle.” Id. The invention in Denney “includes a verti-
cal, load-bearing truss member extending generally along
a longitudinal, central axis of the vehicle within the
passenger compartment, the truss member forming a
load-bearing structural member between the pair of
seats.” Id.Denney’s specification describes the state of the art at
the time of the invention disclosed therein, and the
tradeoffs between certain known vehicle designs. The
specification explains that ATVs “typically have a short
wheelbase which gives the ATV increased maneuverabil-
ity and transportability over their counterpart recreation-
al vehicles such as sandrails or a dune buggies [sic].” Id.col. 1, ll. 17–20 (emphasis added). But, “[h]istorically,
6 POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC.
ATVs with a shorter wheelbase require that the ATV
occupancy area be raised to accommodate the decreased
amount of space between the wheels. By raising the
occupancy area, the center of gravity of the ATV is also
raised.” Id. col. 1, ll. 22–26 (emphasis added). “The result
of a higher center of gravity is a decrease in vehicle stabil-
ity and subsequent increased risk of rollovers.” Id. col. 1,
ll. 26–28 (emphasis added).
On the other hand, recreational vehicles such as dune
buggies “with wider wheelbases are able to accommodate
vehicle occupants lower in the vehicle plane and hence
have a lower center of gravity.” Id. col. 1, ll. 30–32 (em-
phasis added). But “the wider wheelbase decreases the
vehicles [sic] maneuverability as well as the ability to
transport the recreational vehicle in the back of a stand-
ard pick up truck bed.” Id. col. 1, ll. 34–36 (emphasis
added). Denney therefore explains that “[i]t would be
advantageous to combine the attractive features of the
lower center of gravity vehicles with the attractive fea-
tures of the shorter wheelbase . . . vehicles such that the
resultant ATV has the increased maneuverability and
transportability of a smaller ATV and the lower center of
gravity and resultant enhanced stability of the vehicles
with the wider wheelbases.” Id. col. 1, ll. 37–43.
The invention described in Denney purports to
achieve this desired combination, but purportedly does so
in a two-wheel drive system. See id. col. 4, ll. 29–35
(describing the power train giving the rear wheels addi-
tional movement through the driving axle). It is undis-
puted that Denney lacks features claimed in the ’405
patent that relate to front-wheel drive. See Cross-
Appellant Br. 17. It is also undisputed that Denney does
not disclose the additional limitations recited in claims
16–19 of the ’405 patent. See id. at 23–25.
POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 7
2. Furuhashi
Furuhashi, by contrast, is directed to a “four-wheeled
buggy” that can accommodate a single rider. Furuhashi,
at Abstract; id. col. 1, ll. 6–9. Furuhashi’s specification
explains that, in one embodiment, “a seat S is arranged in
front of the engine room 11 and a fuel tank 120 is located
within an area defined under a cushion 81 of the seat S.”
Id. col. 12, ll. 23–26. Moreover, “[a] battery 16” is “ar-
ranged at the right side of the engine 12 in such a way
that the battery 16 is supported on the right main frame 1
. . . .” Id. col. 5, ll. 39–42. The specification goes on to
explain that, “[u]nder a seatback 80 a fixed plate 123 is
provided to cover a clearance 122 positioned behind the
rider’s waist and is formed thereon with air ventilating
slots 124.” Id. col. 12, ll. 31–34. In addition, Figure 19
depicts a “space 121” running below the fixed plate 123,
the “lower part” of which “is provided for passing
therethrough a front wheel driving apparatus such as a
front propeller shaft 18 and the like as referred to in
FIGS. 2 and 5.” Id. col. 12, ll. 26–31; id. Fig. 19.
3. Hickey
Hickey is directed to “provid[ing] a wheeled high
speed, cross-country, rough terrain vehicle suitable for
use as a reconnaissance vehicle for use with highly mobile
armored forces or for use as a family recreational vehicle.”
Hickey, col. 1, ll. 11–15. The specification explains that
“presently known vehicles are not capable of operating
with modern armored forces at sufficiently high speed and
safety in rough terrain conditions,” and declares that:
[t]he vehicle of the present invention achieves this
higher mobility through a novel drive train that
takes power from the transmission and divides it
between a front differential and a rear limited slip
differential by means of an interaxle differential
that incorporates a limited slip features [sic] in
both forward or reverse.
8 POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC.
Id. col. 1, ll. 15–25.
C. The Board’s Final Written Decisions
After being sued for infringing claims of the ’405 pa-
tent in district court, Arctic Cat filed two petitions for
inter partes review, challenging the patentability of claims
1–38 as obvious in view of combinations of certain prior
art references, including Denney, Furuhashi, and Hickey.
In one petition, Arctic Cat argued that all relevant claims
were obvious in view of the combination of Denney and
Furuhashi. See 1427 Decision, 2016 WL 498434, at *2. 1
In the other petition, it contended that all thirty-eight
claims were obvious in view of Hickey and at least one
other reference. See 1428 Decision, 2016 WL 498539, at
*2. The U.S. Patent and Trademark Office instituted
review on these grounds, and the Board issued two Final
Written Decisions on February 4, 2016. See 1427 Deci-
sion, 2016 WL 498434, at *1; 1428 Decision, 2016 WL
498539, at *1. These decisions, and relevant arguments
raised by the parties as part of these IPRs, are discussed
below.
1. The 1427 IPR
In the 1427 IPR, the Board considered whether the
relevant claims were obvious over the combination of
Denney and Furuhashi. With respect to claim 1, Arctic
1 Arctic Cat argued that all claims except depend-
ent claims 14 and 35 would have been obvious over the
combination of Denney and Furuhashi, and that these
two claims would have been obvious over the combination
of Denney, Furuhashi, and a third prior art reference.
1427 Decision, 2016 WL 498434, at *2. In the proceedings
below, Polaris did not “set forth any assertions concerning
the separate patentability of any of dependent claims 14
and 35.” Id. Polaris does not argue that dependent
claims 14 and 35 are separately patentable on appeal.
POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 9
Cat argued that Denney discloses every limitation recited
in that claim, with the exception of limitations relating to
four-wheel drive and the limitation “a transmission
coupled to and extending rearwardly from the engine.”
1427 Decision, 2016 WL 498434, at *5. Arctic Cat relied
on Furuhashi for these limitations, and provided “three
separate rationales for combining Denney and Furuhashi
to arrive at the subject matter of independent claim 1.”
Id. (citing paragraphs 77–82 of Arctic Cat’s opening
expert declaration). Arctic Cat further argued and sub-
mitted evidence that a person of skill in the art would
have been motivated to position the protective panel,
front driveshaft fuel tank, battery, and driveshaft dis-
closed in Furuhashi within the vehicle disclosed in Den-
ney in the manner recited in claims 15–19.
The Board determined that all thirty-eight claims had
been proven unpatentable as obvious in view of Denney
and Furuhashi, and in so ruling, rejected Polaris’s myriad
arguments to the contrary. First, it disagreed with Pola-
ris that skilled artisans would not have been motivated to
modify Denney into a four-wheel drive vehicle because
Denney discloses a desire for a low center of gravity, and
therefore “teach[es] away” from including anything under
the seating area, such as the front drive shaft and fuel
tank of Furuhashi. Id. at *6. The Board reasoned that,
although Denney “discloses a desire for a low center of
gravity,” this desire is simply one of several “subjective
preferences” that is “a tool of limited value in evaluating
obviousness” due to its “infinite[] variab[ility]” that could
be overcome by other known preferences, such as adding
four-wheel drive to a two-wheel drive vehicle. Id. at *6,
*8.
The Board likewise rejected Polaris’s assertion that
the combination of Denney and Furuhashi does not dis-
close or suggest the additional limitations recited in
dependent claims 15–19, relying in part on its discussion
of “subjective preferences” articulated in its analysis of
10 POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC.
the obviousness of claim 1. Id. at *14–15. Finally, with
respect to claim 34 and its dependents, the Board, among
other things, rejected Polaris’s evidence of secondary
considerations of nonobviousness. Id. at *16–17. In
particular, the Board was not persuaded that Polaris
showed that its “RZR vehicles are covered by claims 34
and 36–38 of the ’405 patent,” and found the supporting
testimony from Polaris’s expert, Dr. John Moskwa, to be
“conclusory” and “devoid of any analysis as to how the
RZR vehicles are covered by” these claims. Id. at *16.
2. The 1428 IPR
In the 1428 IPR, the Board examined whether the
claims of the ’405 patent would have been obvious over
combinations that rely on Hickey as the primary refer-
ence. The Board began its analysis by construing terms
recited in the limitations “a front drive shaft extending
between the transmission and the front axle assembly”
and “a rear drive shaft extending between the transmis-
sion and the rear axle assembly.” 1428 Decision, 2016 WL
498539, at *3–6. The Board construed the term “drive
shaft” to mean “a shaft structure that transmits torque,
and excludes other hardware, such as universal joints,
couplers, bearings, and interaxle differentials.” Id. at *4.
It construed the phrase “extending between” as requiring
“that a given drive shaft, and only that given drive shaft,
must account for the entire distance between the trans-
mission and the respective axle assembly.” Id. at *6.
The Board found that Hickey’s “shaft 22 is connected
to transmission 14 . . . via at least interaxle differential 20
and universal joint 26.” Id. at *7. The Board therefore
concluded “that Hickey does not disclose or suggest ‘a
front drive shaft extending between the transmission and
the front axle assembly,’ as recited in independent claim
1,” and determined that Arctic Cat had not shown, by a
preponderance of the evidence, that the claims of the ’405
POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 11
patent were obvious over combinations including Hickey.
Id.Polaris appeals the 1427 Decision, while Arctic Cat
conditionally cross-appeals the 1428 Decision. We have
jurisdiction over the appeals under 28 U.S.C.
§ 1295(a)(4)(A) (2012).
II. STANDARD OF REVIEW
Obviousness is a question of law based on underlying
factual findings, including the scope and content of prior
art references and the existence of a reason to combine
those references. See In re Hyon, 679 F.3d 1363, 1365–66
(Fed. Cir. 2012) (explaining that motivation to combine is
an underlying factual issue that is reviewed for substan-
tial evidence); In re NuVasive, Inc., 842 F.3d 1376, 1381–
82 (Fed. Cir. 2016) (providing that the “ultimate determi-
nation of obviousness is a question of law” that is based
on underlying factual findings, including those set forth in
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). We
uphold the Board’s factual findings unless they are not
supported by substantial evidence, while we review the
Board’s legal conclusions de novo. Dynamic Drinkware,
LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
2015). A finding is supported by substantial evidence if a
reasonable mind might accept the evidence to support the
finding. In re Jolley, 308 F.3d 1317, 1320 (Fed. Cir. 2002).
III. DISCUSSION
Polaris attacks the 1427 Decision on three grounds.
First, it argues that the Board’s analysis of the purported
obviousness of claims 15–19 cannot withstand scrutiny,
either because it is predicated on an improper claim
construction or was too cursory. Second, it submits that
the Board relied on impermissible hindsight in combining
features of Denney and Furuhashi to arrive at certain of
the claimed inventions, failing to articulate a valid moti-
vation to combine these references and applying a “sub-
12 POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC.
jective preferences” analysis that finds no basis in this
court’s precedents. Finally, it contends that the Board
erred in rejecting the undisputed evidence that Polaris
introduced regarding the commercial success of its RZR
vehicles that purportedly embody claims 34 and 36–38.
Arctic Cat, in its conditional cross-appeal, argues that
the Board erred in construing the phrase “extending
between” to exclude the possibility of intervening struc-
tures along the length of a given driveshaft. It therefore
asks this court to vacate the Board’s construction, confirm
that the “extending between” limitation permits the
interposition of certain elements in the path of the drive
shaft, and remand for further proceedings.
A. The 1427 IPR
We address Polaris’s challenges in the order they are
raised in its opening brief.
1. Claims 15–19
a. Claim 15
Claim 15 recites the ATV of claim 5, further compris-
ing “a protective panel positioned between the pair of
laterally spaced-apart seating surfaces and the engine.”
’405 patent, col. 11, ll. 61–63 (emphasis added). Polaris
submits that the Board adopted an impermissibly broad
construction of the term “protective panel,” which caused
it to erroneously find that Denney’s “mounting plate 45”
satisfies this limitation. According to Polaris, Denney’s
mounting plate is positioned behind the driver’s side seat
only, whereas the claims require that the “protective
panel” be positioned behind both seats.
Arctic Cat contends that Polaris’s claim construction
argument is both waived and wrong on the merits. We
agree with Arctic Cat that Polaris’s proposed construction
is overly restrictive, and therefore reject Polaris’s argu-
POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 13
ment that the Board erred in finding that Denney’s
mounting plate satisfies the protective panel limitation.
In inter partes review proceedings, the Board gives
claim terms their broadest reasonable interpretation in
light of the claim language and the specification. See
Cuozzo Speed Techs., LLC v. Lee, ––– U.S. ––––, 136
S. Ct. 2131, 2142–46 (2016). Claim 15 specifies that the
protective panel must be “positioned between” the “pair of
laterally spaced-apart seating surfaces” and the engine.
’405 patent, col. 11, ll. 61–63. The specification, moreover,
explains that, in one embodiment, the “output shaft 138
extends under protective panel 134,” which “is positioned
behind upper and lower seating surfaces 18a, 18b and
20a, 20b and protects passengers in ATV 10 from moving
parts of modular engine assembly 34, as well as, assists in
shielding from noise.” Id. col. 7, ll. 41–46.
Nothing in the claims or the specification commands
that the protective panel have any particular positioning
relative to one or both seats. Instead, the intrinsic evi-
dence requires that a portion of the panel must exist in
the space between the seating surfaces and the engine
and must serve some protective function.
Denney’s mounting plate meets both of these re-
quirements. Denney discloses a “mounting plate 45 [that]
may be positioned between the engine and the main
support truss 40” that “may be utilized to separate engine
compartment 25 from the passenger compartment 15 and
provide additional support for placement of the passenger
seats.” Denney, col. 3, ll. 27–32. Figure 1 of Denney,
reproduced below, depicts the mounting plate 45 posi-
tioned laterally between the spaces that house the seating
surfaces and the engine:
14 POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC.
Id. at Fig. 1. Although Polaris contends that no portion of
mounting plate 45 depicted in Figure 1 is positioned
between any portion of the passenger-side seat and the
engine compartment, we do not read this illustration so
restrictively. 2 Even if Polaris is correct that Figure 1
shows a mounting plate that does not extend across the
entire passenger compartment, Denney’s specification is
broader than the embodiment illustrated in that figure.
In particular, the specification states that the mounting
plate may be used to separate the engine “from the pas-
senger compartment,” which houses both seats, and may
“provide additional support for placement of the passenger
seats.” Id. col. 3, ll. 27–32 (emphases added). These
disclosures suggest that the mounting plate can run
behind both seats, which would fall within the broadest
reasonable interpretation of the term “protective panel.”
This is consistent with the Board’s finding that Denney’s
mounting plate “is disposed between engine compartment
25 and passenger compartment 15,” which, “[b]y virtue of
its placement and existence alone . . . would provide some
2 It is not clear from the drawing where mounting
plate 45 begins and ends.
POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 15
protection” to those in the passenger compartment. 1427
Decision, 2016 WL 498434, at *14. It is also consistent
with the testimony of Arctic Cat’s expert, which the Board
credited, see id., that a person of ordinary skill would
have recognized that Denney “teaches a protective panel
positioned between the seating surfaces and the engine,
as claimed in claim 15,” J.A. 1026 ¶ 120.
In short, we see no error in the Board’s finding that
Denney’s mounting plate satisfies the protective panel
limitation. We therefore affirm the Board’s determination
that claim 15 would have been obvious.
b. Claim 16
Claim 16 recites the ATV of claim 15, “wherein the
front driveshaft extends under the protective panel.” ’405
patent, col. 11, ll. 64–65. Polaris contends that the
Board’s conclusion that claim 16 was obvious is based on
the unsupported finding that a skilled artisan would have
known to include Furuhashi’s front driveshaft “under-
neath the ATV of Denney” to obtain the known benefits of
four-wheel drive. According to Polaris, the only evidence
on the issue of adding a driveshaft “underneath the ATV
of Denney” came from its expert, who unequivocally
stated that one skilled in the art would not have adopted
such a design because “[t]his location would expose the
driveshaft to damage and decrease the vehicle’s clear-
ance.” J.A. 3636. Arctic Cat responds by arguing, among
other things, that it introduced sufficient evidence to
demonstrate the obviousness of claim 16’s below-panel-
positioning limitation, including by describing the bene-
fits that such a modification would confer, particularly
regarding safety.
Substantial evidence supports the Board’s determina-
tions that one of ordinary skill in the art would have been
motivated to place the front driveshaft of Furuhashi
underneath the mounting plate of Denney and would
have known how to accomplish this modification. As part
16 POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC.
of its analysis concerning the obviousness of claim 1, the
Board expressly credited the testimony of Arctic Cat’s
expert that “the structure of Denney discloses adequate
space to place a front drive shaft with minimal other
modifications,” and relied on Arctic Cat’s evidence to find
that “Denney’s existing structure could support a front
drive shaft alongside or in place of support truss 40,
which would not raise the center of gravity of Denney’s
ATV.” 1427 Decision, 2016 WL 498434, at *10 (citing
paragraphs 16–18 of Arctic Cat’s expert’s declaration and
certain other exhibits).
Figures 1 and 3 of Denney illustrate that support
truss 40 runs “under” mounting plate 45, and therefore
running a front driveshaft alongside or in place of this
truss would result in running the driveshaft underneath
the protective panel, satisfying the additional limitation
of claim 16. Denney, Figs. 1, 3. Although the Board’s
reasoning could have been more thorough, we do not “find
fault in the Board’s arguably limited treatment of [Pola-
ris’s] arguments” concerning the positioning of the
driveshaft, where the Board’s treatment “was at least
commensurate with” Polaris’s presentation of this issue.
Novartis AG v. Torrent Pharm. Ltd., 853 F.3d 1316, 1327–
28 (Fed. Cir. 2017) (concluding that the Board did not err
in failing to consider the patent owner’s argument con-
cerning a lack of motivation to combine references where
the patent owner “did not direct the Board to the expert
declarations it now highlights on appeal” or “to any record
evidence at all” and did not “meaningfully advance [its]
suggested negatives or develop[ ] them in such a fashion
as to necessarily overcome the numerous advantages”
found to result from the combination). Accordingly, we
affirm the Board’s determination that claim 16 would
have been obvious.
POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 17
c. Claims 17–19
Claims 17–19 depend from claim 16 and include the
following additional limitations: (1) “a fuel tank, the
spaced-apart seating surfaces including a driver seating
surface and a passenger seating surface, the fuel tank
being positioned below one of the seating surfaces,” (claim
17); (2) “a battery positioned below the other of the seating
surfaces,” (claim 18); and (3) a front driveshaft “ex-
tend[ing] laterally between the fuel tank and the battery,”
(claim 19). ’405 patent, col. 11, l. 66–col. 12, l. 6 (empha-
sis added). The Board determined that all three claims
were obvious, rejecting each of Polaris’s arguments and
citing Arctic Cat’s expert’s testimony. 1427 Decision,
2016 WL 498434, at *15.
Polaris contends that the Board’s analysis with re-
spect to these claims suffers from multiple legal errors, all
of which stem from the premise that “[v]ehicle design is
essentially a packaging exercise,” in which the “compo-
nents are standard, but where they are placed is crea-
tive.” Appellant Br. 36. First, it argues that the Board
improperly relied on hindsight in determining that these
claims were obvious. It next submits that the Board
mistakenly concluded that, because Polaris introduced
undisputed evidence that these components could be
configured in multiple ways, Polaris admitted that these
claims would have been obvious. Third, Polaris contends
that the Board improperly rejected its evidence that
Denney teaches away from introducing these modifica-
tions. Finally, Polaris argues that the Board failed to
explain its rationale for determining that claims 18 and
19 would have been obvious.
We conclude that the Board’s analysis of these claims
was inadequate. We begin with claim 17. Although it is
true that the Board credited the testimony of Arctic Cat’s
expert that skilled artisans would have been motivated to
include a fuel tank below one of the surfaces to improve
18 POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC.
the distribution of weight across the vehicle, see 1427
Decision, 2016 WL 498434, at *15, this finding does not,
standing alone, support a determination of obviousness.
This is because the Board (1) failed to consider Polaris’s
uncontested evidence that skilled artisans would not have
been motivated to place a fuel tank under Denney’s seats;
and (2) applied a legal analysis that not only finds no
support in our caselaw, but also runs contrary to the
concept of teaching away.
Regarding the first point, Polaris introduced undis-
puted evidence below that placing a fuel tank underneath
one of Denney’s seats would have required significantly
raising the occupancy area. See J.A. 3667–68 (citing
Denney, col. 1, ll. 25–28). According to Polaris, such a
modification would have been contrary to Denney’s teach-
ing that, “[b]y raising the occupancy area, the center of
gravity of the ATV is also raised,” which results in “a
decrease in vehicle stability and subsequent increased
risk of rollovers. See Denney, col. 1, ll. 25–28. 3 The
question, then, is whether the Board properly considered
this undisputed evidence and other evidence introduced
by the parties in evaluating whether persons of skill in
the art would have been motivated to modify Denney to
meet the limitations of claims 17–19.
The remainder of the Board’s analysis demonstrates
that it did not. The Board failed to analyze whether
3 Although Polaris made a similar “teaching away”
argument with respect to claim 1, Arctic Cat introduced
evidence that a person of skill in the art could have modi-
fied Denney to meet the additional limitations of claim 1
without raising the center of gravity of the vehicle. The
Board credited Arctic Cat’s evidence, and Polaris does not
challenge this finding on appeal. Thus, the obviousness
inquiry with respect to claim 17 is materially distinct
from that concerning claim 1.
POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 19
Denney “teaches away” from claims 17–19 by determining
whether “a person of ordinary skill, upon reading [Den-
ney], would be discouraged from following the path set out
in [Denney], or would be led in a direction divergent from
the path that was taken by the applicant.” In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004). This was error.
The Board’s evaluation of Polaris’s teaching away ar-
gument was, in the Board’s own words, “the same as that
set forth above with respect to why similar assertions set
forth for independent claim 1 were unpersuasive . . . .”
1427 Decision, 2016 WL 498434, at *15. As part of this
earlier analysis, the Board rejected Polaris’s supposed
“conflat[ion] [of] known modifications having known
benefits with subjective preferences,” and held “that an
obviousness analysis should focus on whether a modifica-
tion is known to implement and has known benefits[.]”
Id. at *6. The Board then stated that “one of ordinary
skill has the ability to weigh the various benefits and
disadvantages based on subjective preferences in an
analysis largely unrelated to obviousness.” Id. (emphasis
added).
We have never articulated a framework for analyzing
whether claims would have been obvious that includes the
phrase “subjective preference” or that permits a tribunal
to wholly disregard the significance of prior art teachings
based on such a characterization. Nevertheless, the
Board applied its “subjective preferences” analysis to
reject Polaris’s argument that Denney’s stated desire for a
low center of gravity “teaches away” from making modifi-
cations that would raise the ATV’s center of gravity,
without conducting a proper teaching away analysis. See
generally id. at *6–11.
There are three specific problems with the “subjective
preference” analysis espoused and applied by the Board.
First, by completely disregarding certain teachings as ill-
defined “subjective preferences,” the Board’s approach
20 POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC.
invited the “distortion caused by hindsight bias” into the
fold. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421
(2007). We have observed that “the prejudice of hindsight
bias” often overlooks that the “genius of invention is often
a combination of known elements which in hindsight
seems preordained.” Power Integrations, Inc. v. Fairchild
Semiconductor Int’l, Inc., 711 F.3d 1348, 1368 (Fed. Cir.
2013) (quoting McGinley v. Franklin Sports, Inc., 262 F.3d
1339, 1351 (Fed. Cir. 2001)). We have also recognized
that, “[w]hen the art in question is relatively simple, as is
the case here, the opportunity to judge by hindsight is
particularly tempting.” McGinley, 262 F.3d at 1351(citations omitted).
Second, the Board focused on what a skilled artisan
would have been able to do, rather than what a skilled
artisan would have been motivated to do at the time of the
invention. See InTouch Techs., Inc. v. VGO Commc’ns,
Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014) (concluding that
a party’s expert “succumbed to hindsight bias in her
obviousness analysis” where such analysis “primarily
consisted of conclusory references to her belief that one of
ordinary skill in the art could combine these references,
not that they would have been motivated to do so”).
Third, the Board’s analysis encourages the fact-finder
to outright discard evidence relevant both to “teaching
away” and to whether skilled artisans would have been
motivated to combine references. “A reference may be
said to teach away when a person of ordinary skill, upon
reading the reference, would be discouraged from follow-
ing the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the
applicant.” DePuy Spine, Inc. v. Medtronic Sofamor
Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting
Ricoh Co., Ltd. v. Quanta Comput. Inc., 550 F.3d 1325,
1332 (Fed. Cir. 2008)). Moreover, a reference “must [be]
considered for all it taught, disclosures that diverged and
taught away from the invention at hand as well as disclo-
POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 21
sures that pointed towards and taught the invention at
hand.” Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc., 776 F.2d 281, 296 (Fed. Cir. 1985) (citation omitted).
A reference does not teach away “if it merely expresses a
general preference for an alternative invention but does
not ‘criticize, discredit, or otherwise discourage’ investiga-
tion into the invention claimed.” DePuy, 567 F.3d at 1327(quoting In re Fulton, 391 F.3d at 1201). But even if a
reference is not found to teach away, its statements
regarding preferences are relevant to a finding regarding
whether a skilled artisan would be motivated to combine
that reference with another reference. See Apple Inc. v.
Samsung Elecs. Co., 839 F.3d 1034, 1051 n.15 (Fed. Cir.
2016) (en banc) (noting that, even if a reference “does not
teach away, its statements regarding users preferring
other forms of switches are relevant to a finding regarding
whether a skilled artisan would be motivated to combine
the slider toggle in” that reference with the invention of a
second reference).
In this case, it is undisputed that adding a fuel tank
under one of the seats of Denney’s ATV would significant-
ly raise its occupancy area, thereby raising the center of
gravity and rendering the vehicle less stable, which would
run contrary to one of Denney’s stated purposes. See
Denney, col. 1, ll. 25–28, 38–44; J.A. 3667–68. The
Board’s treatment of this evidence was deficient, and we
therefore vacate its determination that claim 17 would
have been obvious. 4 Because claims 18 and 19 depend
4 The Board compounded this error by transforming
Polaris’s argument that “[t]here are many other potential
locations for a gas tank in an ATV” into an admission that
it would have been obvious to place a fuel tank under-
neath one of the two seats in Denney. 1427 Decision,
2016 WL 498434, at *15. The Board failed to consider
that “[m]erely stating that a particular placement of an
22 POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC.
from claim 17, we vacate the Board’s obviousness deter-
mination with respect to those claims as well. 5
On remand, the Board must analyze whether Denney
“teaches away” from claims 17–19 under the framework
that our caselaw has articulated. The Board must deter-
mine whether Denney merely expresses a general prefer-
ence for maintaining very low seats or whether Denney’s
teachings “criticize, discredit, or otherwise discourage”
significantly raising the occupancy area of Denney’s ATV
to add a fuel tank under one of the seats. DePuy,
element is a design choice does not make it obvious.”
Cutsforth, Inc. v. MotivePower, Inc., 636 F. App’x 575, 578
(Fed. Cir. 2016). Instead, the Board must explain why a
person of ordinary skill in the art “would have selected
these components for combination in the manner
claimed.” In re Kotzab, 217 F.3d 1365, 1371 (Fed. Cir.
2000); In re Rouffet, 149 F.3d 1350, 1359 (Fed. Cir. 1998)
(“[T]he Board must explain the reasons one of ordinary
skill in the art would have been motivated to select the
references and to combine them to render the claimed
invention obvious.”).
5 The Board’s analysis with respect to claims 18
and 19 failed to credit any evidence submitted by Arctic
Cat regarding a motivation or ability to modify Denney’s
ATV to satisfy the additional limitations of these claims
using Furuhashi’s battery and front driveshaft. This is
particularly problematic given that Furuhashi discloses a
single-seat ATV. “The PTAB’s own explanation must
suffice for us to see that the agency has done its job and
must be capable of being ‘reasonably . . . discerned’ from a
relatively concise PTAB discussion.” In re Nuvasive, 842
F.3d at 1383 (quoting In re Huston, 308 F.3d 1267, 1281
(Fed. Cir. 2002)). “[I]t is not adequate to summarize and
reject arguments without explaining why the PTAB
accepts the prevailing argument.” Id. (citation omitted).
POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 23
567 F.3d at 1327. Even if the Board determines that
Denney does not teach away because it merely expresses
a general preference, the statements in Denney are still
relevant to determining whether a skilled artisan would
be motivated to combine Denney and Furuhashi. See
Apple, 839 F.3d at 1051 n.15.
2. Claim 1
Polaris argues that the Board erred in its analysis of
whether claim 1 would have been obvious because it
improperly found a motivation to combine the dune buggy
disclosed in Denney with the ATV disclosed in Furuhashi.
Appellant Br. 47–49. According to Polaris, the Board’s
analysis does not address why a person of skill in the art
“looking to get the benefits of four-wheel drive would start
with a dune buggy reference like Denney as the primary
reference in the first place.” Id. at 48. Polaris submits
that the evidence demonstrates that a person of skill in
the art “does not simply convert a rear-wheel-drive vehi-
cle to a four-wheel-drive vehicle without having to do a
complete vehicle redesign, which would motivate such a
person to not modify Denney as Arctic contends.” Id. at
49.
We find Polaris’s argument that there is no evidence
why one of skill in the art looking to create a four-wheel
drive ATV would be motivated to start with Denney’s
dune buggy unavailing. First, as the Board found, Den-
ney refers to its invention as an “all terrain vehicle[]” with
“a pair of seats for the side-by-side passengers.” 1427
Decision, 2016 WL 498434, at *6; see Denney, col. 1, ll. 14–
15 (“The present invention relates generally to all terrain
vehicles.”). Polaris also does not challenge the Board’s
conclusion that the inventions described in Denney and in
the ’405 patent are directed to solving problems associat-
ed with side-by-side ATVs, and are therefore analogous
art under the test set forth in In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004). See 1427 Decision, 2016 WL
24 POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC.
498434, at *6 (“[W]e find that the ’405 patent and Denney
are both directed to solving problems associated with side-
by-side ATVs, which meets either prong of the analogous
art test.”). Nor does Polaris challenge the Board’s find-
ings that four-wheel drive was a well-known feature with
known benefits, including increased traction and better
acceleration in off-road conditions, and that a person
skilled in the art could add four-wheel drive to Denney
without raising the center of gravity of Denney’s vehicle.
See Appellant Br. 26, 48.
Based on these fact-findings, we conclude that the
Board articulated a valid motivation to combine the
inventions of Denney and Furuhashi. See WBIP, LLC v.
Kohler Co., 829 F.3d 1317, 1337 (Fed. Cir. 2016) (“Wheth-
er a skilled artisan would be motivated to make a combi-
nation includes whether he would select particular
references in order to combine their elements. This is
part of the fact question . . . .”). We therefore affirm the
Board’s determination that claim 1 would have been
obvious. 6 We likewise affirm the Board’s obviousness
6 Polaris claims that the Board improperly invoked
the “subjective preferences” analysis we rejected above to
ignore Denney’s teaching away from the inventions of
claims 1, 25, and 34, and contends that the Board’s refer-
ence to this analysis warrants vacatur of the Board’s
conclusions on each of these claims, just as it does with
respect to claims 17–19. Polaris wholly fails to explain,
however, how the Board relied on this test in concluding
that claim 1 and its dependents were obvious. Important-
ly, Polaris fails to explain how any reference to “subjective
preferences” in connection with claim 1 impacted the
factual findings which we find support the Board’s obvi-
ousness conclusion with respect to that claim. We, thus,
conclude that any reference to “subjective preferences” in
POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 25
determination regarding claims 2–14, 20–33, and 35, as
Polaris does not raise any separate patentability argu-
ments as to these dependent claims.
3. Claims 34 and 36–38
Polaris next challenges the Board’s analysis of claims
34 and 36–38. Polaris argues that the Board improperly
failed to weigh its evidence of commercial success in
assessing whether claims 34 and 36–38 would have been
obvious. Specifically, Polaris contends that the Board was
wrong to reject its evidence of commercial success on the
ground that Polaris failed to prove that its successful RZR
vehicles are actually covered by or practice those particu-
lar claims of the ’405 patent.
According to Polaris, its expert performed a proper
and complete analysis of the evidence of commercial
success by reviewing the patent and claims, inspecting
the RZR vehicles, studying literature relating to these
vehicles, and comparing the vehicles to the claims. Pola-
ris further points out that neither Arctic Cat nor its
experts disputed these conclusions. On these grounds,
Polaris submits that the Board’s rejection of Polaris’s
expert’s testimony runs afoul of our recent decision in
PPC Broadband, Inc. v. Corning Optical Communications
RF, LLC, 815 F.3d 734, 747 (Fed. Cir. 2016). We agree.
Polaris also submits that, because it presented evi-
dence showing its covered RZR vehicles were a commer-
cial success, having generated over $1.5 billion in sales
since 2007, it was entitled to a presumption of commercial
success. Polaris claims that it should have been entitled
to such a presumption because it introduced evidence that
the RZR vehicles became the market leader within two
years after launch. Appellant Br. 58 (citing J.A. 3862
the Board’s analysis of claim 1, though error, was harm-
less.
26 POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC.
¶ 56). Relatedly, Polaris argues that it is entitled to a
presumption of a nexus between that commercial success
and the claims of the ’405 patent, citing to WBIP, LLC v.
Kohler Co. for the proposition that “[t]here is a presump-
tion of nexus for objective considerations when the pa-
tentee shows that the asserted objective evidence is tied
to a specific product and that product ‘is the invention
disclosed and claimed in the patent.’” 829 F.3d at 1329
(quoting J.T. Eaton & Co. v. Atl. Paste & Glue Co., 106
F.3d 1563, 1571 (Fed. Cir. 1997)). Again, we agree.
“The objective indicia of non-obviousness play an im-
portant role as a guard against the statutorily proscribed
hindsight reasoning in the obviousness analysis.” Id. at
1328. Indeed, we have held that such evidence “may often
be the most probative and cogent evidence in the record.”
Id. (quoting Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d
1530, 1538 (Fed. Cir. 1983)). “A determination of whether
a patent claim is invalid as obvious under § 103 requires
consideration of all four Graham factors, and it is error to
reach a conclusion of obviousness until all those factors
are considered.” Id. (citing In re Cyclobenzaprine Hydro-
chloride Extended-Release Capsule Patent Litig., 676 F.3d
1063, 1075 (Fed. Cir. 2012)).
Evidence of commercial success is one such objective
indicator of non-obviousness. We have held that a pa-
tentee “cannot demonstrate commercial success, for
purposes of countering the challenge of obviousness,
unless it can show that the commercial success of the
product results from the claimed invention.” J.T. Eaton,
106 F.3d at 1571. Put another way, “objective evidence of
non-obviousness must be commensurate in scope with the
claims which the evidence is offered to support.” Asyst
Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir.
2008) (quoting In re Grasselli, 713 F.2d 731, 743 (Fed. Cir.
1983)). We presume that such a nexus applies for objec-
tive indicia when the patentee shows that the asserted
objective evidence is tied to a specific product and that
POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 27
product “embodies the claimed features, and is coexten-
sive with them.” Brown & Williamson Tobacco Corp. v.
Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000).
Conversely, “[w]hen the thing that is commercially suc-
cessful is not coextensive with the patented invention—for
example, if the patented invention is only a component of
a commercially successful machine or process—the pa-
tentee must show prima facie a legally sufficient relation-
ship between that which is patented and that which is
sold.” Demaco Corp. v. F. Von Langsdorff Licensing Ltd.,
851 F.2d 1387, 1392 (Fed. Cir. 1988).
A patent challenger may rebut the presumption of
nexus by presenting evidence “to show that the commer-
cial success was due to extraneous factors other than the
patented invention,” id. at 1393, such as “additional
unclaimed features and external factors, such as im-
provements in marketing,” WBIP, 829 F.3d at 1329.
“However, a patent challenger cannot successfully rebut
the presumption with argument alone—it must present
evidence.” WBIP, 829 F.3d at 1329 (citing Brown &
Williamson Tobacco, 229 F.3d at 1130; Demaco, 851 F.2d
at 1393).
Relying on these principles, we considered how the
Board should treat undisputed evidence from a patentee
that its product is the invention disclosed in the chal-
lenged claims in PPC Broadband, writing:
When the patentee has presented undisputed evi-
dence that its product is the invention disclosed in
the challenged claims, it is error for the Board to
find to the contrary without further explanation.
There was no such explanation here. The Board
in its opinions did not explain why the Signal-
Tight connectors fail to embody the claimed fea-
tures, or what claimed features in particular are
missing from the SignalTight connectors. Nor
does Corning justify this finding on appeal. Sub-
28 POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC.
stantial evidence does not support the Board’s
finding on this point.
815 F.3d 734, 745–47 (footnote omitted).
Here, the Board “decline[d] to accord . . . substantive
weight” to the patentee’s undisputed evidence that its
product is the invention disclosed in certain claims be-
cause it characterized the patentee’s evidence as “conclu-
sory.” 1427 Decision, 2016 WL 498434, at *16. On these
facts, we conclude that the Board erred in failing to credit
Polaris’s undisputed evidence that its RZR vehicles em-
body and are coextensive with claims 34 and 36–38 of the
’405 patent.
Polaris’s expert, Dr. Moskwa, submitted a declaration
in which he testified that he had reviewed the ’405 patent
and all claims recited therein, reviewed the RZR vehicles
“and literature (e.g., parts catalogs and parts drawings)
associated therewith,” and construed the claim terms
recited in the claims as one of ordinary skill in the art
would understand them. J.A. 3593 ¶¶ 58–60. He further
testified that he compared the RZR vehicles to the claims
and determined, “based on [his] inspection, analysis, and
study,” that a list of eight RZR vehicles embody each
element recited in claims 34 and 36–38 of the ’405 patent.
J.A. 3594 ¶ 61. Arctic Cat presented no contrary evi-
dence.
The Board found Dr. Moskwa’s averments to be “con-
clusory statements,” and, thus, rejected Polaris’s evidence
of commercial success in its entirety. Our case law does
not require a patentee and its expert to go further than
Polaris did here, however, to demonstrate that its com-
mercial products are the inventions disclosed in the
challenged claims, where the proffered evidence is not
rebutted and the technology is relatively simple. Claims
34 and 36–38 broadly cover the entire vehicle, rather than
“only a component of a commercially successful machine.”
Demaco, 851 F.2d at 1392. Moreover, the Board did not
POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 29
point to any limitation it found missing in the RZR vehi-
cles. On these undisputed facts, we hold that the Board
erred in failing to find that Polaris’s eight RZR vehicles
are the inventions disclosed in claims 34 and 36–38. 7
Because the evidence submitted by Polaris demon-
strates these vehicles are “the invention disclosed and
claimed in the patent,” we presume that any commercial
success of these products is due to the patented invention.
J.T. Eaton, 106 F.3d at 1571. On remand, the Board
must assess the import of this evidence after presuming
that a nexus between the claims and the commercial
success of the RZR vehicles exists, unless and until that
presumption is adequately rebutted.
4. Conclusion Regarding the 1427 IPR
We have considered the remainder of the parties’ ar-
guments related to the 1427 IPR, and find them unper-
suasive. We therefore affirm the Board’s determination in
the 1427 Decision that claims 1–16, 20–33, and 35 are
unpatentable as obvious. We vacate the Board’s obvious-
ness determination as to claims 17–19, 34, and 36–38 and
remand for further proceedings.
B. The 1428 IPR
Finally, because we vacate the Board’s obviousness
determination with respect to certain claims in the 1427
7 We reject the implication that either a “limitation-
by-limitation analysis” or “documentary evidence” is
required for PPC Broadband to apply, finding no support
for such a principle in our precedent. Compare Cross-
Appellant Br. 65 (arguing that PPC Broadband requires
limitation-by-limitation analysis or documentary evi-
dence), with Appellant Br. 34 (arguing that PPC Broad-
band does not so require).
30 POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC.
IPR, we consider the merits of Arctic Cat’s conditional
cross appeal from the 1428 Decision.
Arctic Cat argues that the Board erred in its construc-
tion of the phrase “extending between” in claim 1’s limita-
tion “a front drive shaft extending between the
transmission and the front axle assembly.” The Board
construed this phrase as requiring that a front drive
shaft, and only that drive shaft, “account for the entire
distance between the transmission and the [front] axle
assembly.” 1428 Decision, 2016 WL 498539, at *6.
Arctic Cat submits that, in typical use, and certainly
in its broadest reasonable use, the phrase “extending
between” does not exclude the possibility of intervening
structures. In so arguing, Arctic Cat analogizes that
Pennsylvania Avenue extends between Georgetown and
the southeast border of Washington, DC, even though “the
U.S. Capitol is interposed between.” Cross-Appellant Br.
79. It submits that the Board’s decision to “cherry-pick”
dictionary definitions of the phrase “extending between”
is improper, and further argues that other definitions
tend to show that the broadest reasonable meaning of
“extend” demonstrates that this limitation is not as
narrow as the Board held. Id. at 80–82. Arctic Cat also
contends that the Board erred by improperly elevating
dictionary definitions over the clear guidance of the
specification.
We disagree, and conclude that the phrase “extending
between,” read in light of the claims, specification, and
extrinsic evidence of record, requires that the front
driveshaft account for the entire distance between the
transmission and the front axle assembly, rather than
some portion of that distance. A derivation of the phrase
“extend between” appears four times in the specification.
In each instance, the specification and associated figures
illustrate that the component that “extends between” two
other components spans the entire distance, as opposed to
POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC. 31
a portion of the entire distance, between those other
components. See ’405 patent, col. 4, ll. 13–15
(“[W]heelbase A, which extends between the center of
front axle 36 and the center of rear axle 38, is equal to
about 77 inches (195.6 centimeters).”); id. col. 4, ll. 30–33
(“[W]idth C, which is defined as the overall width of ATV
10, extends between the outermost lateral points of ATV
10.”); id. col. 8, ll. 2–4 (“Front brackets 162 and rear
brackets 160 extend between lower tubes 180 and down
tubes 105.”); id. col. 8, ll. 51–53 (“Upper ends of dampen-
ers 217 are pivotally coupled to bracket 223 extending
between rear tubes 207.”). Arctic Cat points to no in-
stance where the ’405 patent specification uses “extending
between” to refer to a structure that is merely located
between two other structures. We have considered Arctic
Cat’s other arguments, and find them unpersuasive.
Because we agree with the Board’s construction of the
phrase “extending between,” and because Arctic Cat does
not submit that we should reverse or vacate the Board’s
decision under that construction, we affirm the Board’s
determination that Arctic Cat has not demonstrated, by a
preponderance of the evidence, that claims 1–38 of the
’405 patent are unpatentable as obvious. We do not
address the remainder of Arctic Cat’s cross-appeal.
IV. CONCLUSION
For the foregoing reasons, we affirm the Board’s de-
termination in the 1427 Decision that claims 1–16, 20–33,
and 35 of the ’405 patent are unpatentable as obvious.
We vacate the Board’s obviousness determination as to
claims 17–19, 34, and 36–38 and remand for further
proceedings. We affirm the Board’s determination in the
1428 Decision that Arctic Cat failed to meet its burden of
demonstrating that the claims of the ’405 patent are
unpatentable.
AFFIRMED IN PART, VACATED IN PART, AND
REMANDED
32 POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC.
COSTS
No costs.